DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of species (a) (illustrated in Figures 1-5) in the reply filed on July 13, 2026 is acknowledged.
Claim Objections
Claims 1-11 are objected to because of the following informalities: there appears to be additional (i.e., more than the one required) spaces between terms and punctuation throughout the claims. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: there is an open (mismatched) parenthesis at the end of Line 16. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: there should be a comma after the phrase “in the axial plane (AE)” and the term “and” in Line 24. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: (a) “retaining portion” in claim 1; and “cutting portion” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “at least one cutting portion” in Lines 2-3. It is unclear what constitutes the cutting portion as there is only one cutting portion in the disclosed invention. Moreover, the claims do not provide for more than one cutting portion comprising the elements therefor. Appropriate correction required.
Claim 2 recites “the at least one cutting portion is designed so as to be mirror-symmetrical” in Lines 1-2. The metes and bounds of the phrase “designed so as to be” are not clearly delineated. This phrase creates vagueness as to whether the at least one cutting portion is mirror-symmetrical or is merely designed to be without necessarily actually being mirror-symmetrical. Appropriate correction required.
Claim 5 recites “the first end face portion abuts the first end face via a first end edge and the second end face portion abuts the second end face via a second end edge.” It is unclear how the first end face portion and the second end face portion, which are each part of the end face, abut respective end faces. There is insufficient antecedent basis for each of “the first end face” and “the second end face.” As such, it is unclear where the respective end edges are located. Appropriate correction required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujii et al. (US Patent No. 9,205,495 B2).
Fujii et al. (“Fujii”) discloses a turning bit (1; Figs. 1-20) for face-grooving and parting, having a body that extends along a longitudinal axis and includes a retaining portion (7) and at least one cutting portion (10). The retaining portion has a maximum width that is less than a maximum width of the at least one cutting portion (Fig. 1(b)). The at least one cutting portion includes an upper face (2), a lower face (3) arranged opposite the upper face, a first lateral face (5), a second lateral face (5) arranged opposite the first lateral face, and an end face (4). The first lateral face and the second lateral face each extend from the lower face to the upper face (Figs. 1-20). The first lateral face abuts the upper face via a first lateral edge (63) and the second lateral face abuts the upper face via a second lateral edge (63; Figs. 1-20). The end face extends from the lower face to the upper face as well as from the first lateral face to the second lateral face (Figs. 1a, 6a, 11, 13, 16, 17). The end face abuts the upper face via a cutting edge (6, 60). The cutting edge abuts the first lateral edge via a first cutting corner and abuts the second lateral edge via a second cutting corner (Figs. 2, 3). The first cutting corner and the second cutting corner are arranged mirror-symmetrically to a vertical plane (Translation; Fig. 3) extending along the longitudinal axis. The cutting edge has a center-point arranged on the vertical plane (Fig. 3). The center-point is distanced from an axial plane towards the retaining portion, wherein the first cutting corner and the second cutting corner are arranged in the axial plane and the axial plane extends orthogonally to the longitudinal axis (Fig. 3).
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 2780385 Y), or alternatively, rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 2780385 Y) in view of Tagstrom et al. (US Patent No. 5,827,017).
(Claim 1) Liu et al. (“Liu”) discloses a turning bit (Figs. 1-3) for face-grooving and parting, having a body that extends along a longitudinal axis and includes a retaining portion (11) and at least one cutting portion (12). The retaining portion has a maximum width that is less than a maximum width of the at least one cutting portion (shown in Fig. 1 by the radial expansion of surface 7 relative to surface portion 5). The at least one cutting portion includes an upper face (3), a lower face (4) arranged opposite the upper face, a first lateral face (7, 5), a second lateral face (8, 5) arranged opposite the first lateral face, and an end face (10, 9a-9c). The first lateral face and the second lateral face each extend from the lower face to the upper face (Fig. 1). The first lateral face abuts the upper face via a first lateral edge and the second lateral face abuts the upper face via a second lateral edge (Fig. 1). The end face extends from the lower face to the upper face as well as from the first lateral face to the second lateral face (Fig. 1). The end face abuts the upper face via a cutting edge (1a, 1b, 2). The cutting edge abuts the first lateral edge via a first cutting corner and abuts the second lateral edge via a second cutting corner (Figs. 1, 2). The first cutting corner and the second cutting corner are arranged mirror-symmetrically to a vertical plane (Translation; Fig. 2) extending along the longitudinal axis. The cutting edge has a center-point arranged on the vertical plane (Fig. 2). The center-point is distanced from an axial plane towards the retaining portion, wherein the first cutting corner and the second cutting corner are arranged in the axial plane and the axial plane extends orthogonally to the longitudinal axis (annotated Fig. 2).
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In the alternative, if the retaining portion is not considered to have a maximum width that is less than a maximum width of the at least one cutting portion, such an arrangement is well-known in the art. Tagstrom et al. (“Tagstrom”) discloses a cutting insert (1) with a retaining portion (2) that has a maximum width that is less than a maximum width of the at least one cutting portion (Figs. 1-4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the bit disclosed in Liu with a retaining portion having a maximum width les than the maximum width of the cutting portion as suggested by Tagstrom in order to cut a groove while providing clearance behind the cutting portion such that a groove with a depth greater than the axial length of the cutting portion may be cut, as is well-known in the art, the fact of which examiner takes official notice thereof. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness).
(Claim 2) As best understood, the at least one cutting portion is designed so as to be mirror symmetrical to the vertical plane (Figs. 1, 2; Translation).
(Claim 3) The end face (at 10) forms a tool flank for the cutting edge. The tool flank has a relief angle, but the reference does not explicitly disclose a relief angle within the claim range.
Tagstrom discloses a tool flank having a relief angle (α) overlapping the claimed range (Col. 2, Lines 66-67; Col. 3, Lines 1-4; Fig. 2). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the bit disclosed in Liu with a relief angle within the claimed range as suggested by Tagstrom in order to provide adequate clearance (Col. 2, Lines 66-67). As such, the disclosed range anticipates the claimed range, and “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 I. citing In re Wertheim, 541 F.2d 257 (CCPA 1976).
(Claim 4) The end face includes a first end face portion (10 above 9a) and a second end face portion (10 above 9b), which respectively abut the cutting edge (Fig. 1). Each end face portion extends at a setting angle (α) in the range of 5° to 8° in relation to the axial plane (Translation; Fig. 2). As such, the disclosed range anticipates the claimed range, and “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05 I. citing In re Wertheim, 541 F.2d 257 (CCPA 1976).
(Claim 5) As best understood, the first end face portion abuts the first end face via a first end edge and the second end face portion abuts the second end face via a second end edge (Fig. 1).
(Claim 6) The cutting edge, the first lateral edge, and the second lateral edge extend in a common plane (Fig. 1). It is worth noting here that the entirety of each of the edges are not claimed as extending in the plane. Instead, merely a portion of each need to extend into the plane.
(Claim 7) The center-point is distanced from a horizontal plane towards the lower face (Fig. 1 shows the center-point at 2 dipping below the edges at 1a, 1b). The first cutting corner and the second cutting corner are arranged in the horizontal plane and the horizontal plane extends parallel to the longitudinal axis (Fig. 1).
(Claim 8) The cutting edge has a concave shape (Figs. 1, 2). In either view, the cutting edge has a concave shape.
(Claims 9 and 10) The upper face forms a concave chip well (Fig. 1). That is, the upper face is concavely curved. The claim does not set forth explicitly the physical boundaries of a chip well. The chip well extends up to the cutting edge (Fig. 1). In the event the upper face is not considered to include a concave chip well, Tagstrom discloses a concave chip well (10) that extends up to the cutting edge (Figs. 1-4). At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the bit disclosed in Liu with a concave chip well as taught by Tagstrom in order to guide for cut chips (Col. 3, Lines 13-16).
(Claim 11) As best understood, the first end edge abuts the first cutting corner and the second end edge abuts the second cutting corner (Figs. 1, 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Zinner (GB 1440883 A) (Figs. 4-7) (disclosing cutting bit that anticipates claim 1); Goeberl (AT 9194 U1) (Figs. 1-3) (disclosing a cutting portion that reads upon the claimed invention); and Bandura et al. (US Pub. No. 2022/0314333 A1) (Figs. 1-11) (disclosing a center-point of a cutting portion set back from the axial plane).1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 It is worth noting that the vertical plane is recited as being along the longitudinal axis, but that is not the same as coincident thereto and/or being centrally located between the lateral sides of the bit while being parallel to an axial direction defined by the longitudinal axis.
Prosecution Insights